Deckers v. Slippers - Complaint

Case 5:20-cv-01033 Document 1 Filed 05/14/20 Page 1 of 15 Page ID #:1
1 Brent H. Blakely (SBN 157292)

bblakely@blakelylawgroup.com
2 Mark S. Zhai (SBN 287988)
mzhai@blakelylawgroup.com
3 Colby A. Meagle (SBN 328594)
cmeagle@blakelylawgroup.com
4 BLAKELY LAW GROUP
1334 Parkview Avenue, Suite 280
5 Manhattan Beach, California 90266
Telephone: (310) 546-7400
6 Facsimile: (310) 546-7401
7 Attorneys for Plaintiff
Deckers Outdoor Corporation
8
9 UNITED STATES DISTRICT COURT
10 CENTRAL DISTRICT OF CALIFORNIA
11
DECKERS OUTDOOR ) CASE NO.:
12 CORPORATION, a Delaware )
Corporation, ) COMPLAINT FOR DAMAGES AND
13 ) EQUITABLE RELIEF:
Plaintiff, )
14 ) 1. TRADE DRESS INFRINGEMENT
)
15 v. ) 2. TRADE DRESS INFRINGEMENT
) UNDER CALIFORNIA COMMON
16 ) LAW
SLIPPERS INTERNATIONAL, INC., a )
17 Massachusetts Corporation; and DOES ) 3. UNFAIR COMPETITION IN
1-10, inclusive, ) VIOLATION OF CAL. BUS. &
18 ) PROF. CODE, § 17200
)
19 Defendants. ) 4. UNFAIR COMPETITION UNDER
) CALIFORNIA COMMON LAW
20 )
) 5. PATENT INFRINGEMENT OF
21 ) U.S. PAT. NO. D599,999
)
22 )
) JURY TRIAL DEMANDED
23 )
24
25
26
27
28
1
COMPLAINT FOR DAMAGES AND EQUITABLE RELIEF
1 Plaintiff Deckers Outdoor Corporation (“Deckers” or “Plaintiff”) for

2 its Complaint against Defendant Slippers International, Inc. (“Slippers”) and
3 DOES 1-10 (collectively “Defendants”) alleges as follows:
4 JURISDICTION AND VENUE
5 1. This action arises out of Defendants’ complicit and unlawful acts
6 constituting trade dress infringement and unfair competition in violation of the
7 Lanham Trademark Act of 1946, 15 U.S.C. § 1051, et seq. (the “Lanham Act”), patent
8 infringement arising under the patent laws of the United States, 35 U.S.C. § 1, et seq.
9 and violations of statutory and common law of the state of California.
10 2. This Court has subject matter jurisdiction over the federal claims asserted
11 in this action under 28 U.S.C. §§ 1331 and 1338(a) and supplemental jurisdiction over
12 Plaintiff’s state law claims pursuant to 28 U.S.C. § 1367(a) because they are so related
13 to the federal claims that they form part of the same case or controversy.
14 3. This Court has personal jurisdiction over Defendants because Defendants
15 reside and conduct continuous and systematic business in this district, placed
16 infringing products in the stream of commerce directed to residents of this district,
17 derived commercial benefits from the sale of infringing products and caused injuries
18 to Plaintiff within the Central District of California.
19 4. Venue is proper under 28 U.S.C. §§ 1391 (b)-(c) because a substantial
20 part of the events or omissions giving rise to the claims occurred in this judicial
21 district, and 28 U.S.C. § 1400(b) because Defendants committed acts of infringement
22 in this judicial district.
23 THE PARTIES
24 5. Plaintiff Deckers Outdoor Corporation is a corporation organized and
25 existing under the laws of the State of Delaware with an office and principal place of
26 business located in Goleta, California. Deckers designs and markets footwear
27 products under a number of well-known brands, including UGG® products covered
28 by the intellectual property asserted in this Complaint.
2
1 6. Defendant Slippers International, Inc. is a corporation organized and

2 existing under the laws of the State of California with an office and principal place of
3 business located at 5127 Carriage Road, Rancho Cucamonga, California 91737.
4 7. Deckers is informed and believes that, together with Slippers, other
5 individuals and entities currently named as DOES 1-10 may also be responsible in one
6 manner or another for the wrongs alleged herein, in that at all relevant times, each one
7 (including Slippers) was the agent and servant of the others and acting within the
8 course and scope of said agency and employment. These other individuals and entities
9 are sued under fictitious names DOES 1-10 because their true names and capacities
10 are currently unknown to Deckers. Deckers will seek leave to amend this complaint
11 when their true names and capacities are ascertained.
12 ALLEGATIONS COMMON TO ALL CAUSES OF ACTION
13 A. Deckers’ UGG® Brand
14 8. Deckers has been engaged in the design, distribution, marketing, offering
15 for sale, and sale of footwear since 1975. Deckers owns and markets its footwear
16 products under several distinctive trademarked brands, including UGG®,
17 Koolaburra®, Teva®, Sanuk®, and Hoka One One®.
18 9. Deckers’ UGG® brand is one of the most well-recognized premium
19 comfort-leisure shoe brands in the United States. Since 1979, when the UGG® brand
20 was founded, the popularity of UGG® footwear has steadily grown in the U.S. and
21 around the world. UGG® footwear has been and remains highly coveted today by
22 consumers as one of the most popular and recognizable symbols of luxury and style.
23 10. For example, in 2000, UGG® boots were featured on Oprah’s Favorite
24 Things® where Oprah emphatically declared on national television how much she
25 “LOOOOOVES her UGG boots.” Since then, the popularity of UGG® footwear has
26 grown exponentially, with celebrities such as Kate Hudson, Sarah Jessica Parker, and
27 Tom Brady among a myriad of others regularly seen wearing UGG® sheepskin boots
28 and other footwear products.
3
1 11. The world-wide recognition as a “premium” brand and the overwhelming

2 popularity of the UGG® brand is due to Deckers’ continuous commitment to quality
3 and excellence. Today, Deckers’ footwear products under the UGG® brand are
4 widely available and sold to consumers in every state, including California, through
5 UGG® Concept Stores, authorized brick-and-mortar retailers, as well as on the
6 internet at www.ugg.com.
7 B. Defendants’ Infringing Activities
8 12. This lawsuit arises from Defendants’ design, manufacture, importation
9 into the U.S., distribution, advertisement, marketing, offering for sale, and sale of
10 footwear products (the “Accused Products”) that infringe upon Deckers’ “Bailey
11 Button Boot Trade Dress” and U.S. Pat. No. D599,999.
12 13. Upon information and belief, Defendants are engaged in the design,
13 manufacture, importation into the U.S., distribution, advertisement, marketing,
14 offering for sale, and sale of footwear products, including Accused Products identified
15 as “Tamarac Sonika Boots” or “Willowbee Sonika Boots.”
16 14. Upon information and belief, Slippers imported Accused Products into
17 the U.S. from manufacturers in China and supplied Accused Products to at least four
18 different resellers, including retailers with stores throughout the U.S. Accused
19 Products are also offered for sale and sold through a number of online marketplaces
20 such as Amazon and eBay.
21 15. Upon information and belief, Defendants introduced Accused Products
22 into the stream of commerce in an effort to exploit Deckers’ goodwill and the
23 reputation of the UGG® Bailey Button Boot.
24 16. Deckers has not granted a license or given Defendants any other form of
25 permission to Defendants with respect to its trademarks, trade dresses, or patents.
26 17. Upon information and belief, examples of Accused Products designed,
27 manufactured, imported into the U.S., distributed, advertised, marketed, offered for
28 sale, and sold by Defendants, including the Accused Products identified as “Tamarac
4
1 Sonika Boots” and “Willowbee Sonika Boots” are shown in the photograph below:
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12 18. Upon information and belief, Defendants have acted in bad faith and
13 Defendants’ unlawful infringing acts have misled and confused, and were intended to
14 cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
15 association of Slippers with Deckers, and the origin, sponsorship, or approval of the
16 Accused Products by Deckers.
17 FIRST CLAIM FOR RELIEF
18 (Trade Dress Infringement - 15 U.S.C. § 1125(a))
19 19. Deckers incorporates by reference each and every one of the preceding
20 paragraphs as though fully set forth herein.
21 20. In 2009, Deckers introduced the UGG® Bailey Button Boot, the
22 embodiment of the “Bailey Button Boot Trade Dress.” The Bailey Button Boot Trade
23 Dress is unique and inherently distinctive, and comprised of the following non-
24 functional elements:
25 a. Classic sued boot styling made famous by the UGG® brand;
26 b. Overlapping front and rear panels on the lateral side of the boot
27 shaft;
28 c. Curved top edges on the overlapping panels;
5
1 d. Exposed fleece-type lining edging the overlapping panels and top

2 of the boot shaft; and
3 e. One or more buttons (depending on the height of the boot)
4 prominently featured on the lateral side of the boot shaft adjacent the
5 overlapping panels, on the front panel.
6 21. The Bailey Button Boot Trade Dress, which is a composite of the above-
7 referenced features, is non-functional in its entirety, visually distinctive, and unique in
8 the footwear industry; examples of its distinctive appearance as a whole shown in the
9 photograph below:
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20 22. The design of the Bailey Button Boot Trade Dress is neither essential to
21 its use or purpose, nor does it affect the cost or quality of the shoe. There are
22 numerous other designs available that are equally feasible and efficient, none of which
23 necessitate copying the Bailey Button Boot Trade Dress. The combination of features
24 comprising the Bailey Button Boot Trade Dress provides no cost advantages to the
25 manufacturer or utilitarian advantages to the consumer. These features, in
26 combination, serve only to render UGG® Bailey Button Boot, the embodiment of the
27 Bailey Button Boot Trade Dress, as a distinct and recognizable product originating
28 from Deckers.
6
1 23. UGG® Bailey Button Boots, the embodiment of the Bailey Button Boot
2 Trade Dress, is one of the most well-recognized and commercially successful styles of
3 UGG® brand of footwear, having been featured in many of Deckers’ advertising and
4 promotional materials as well as in various trade publications. UGG® Bailey Button
5 Boots have received a large volume of unsolicited media attention, for example,
6 through various celebrities seen wearing UGG® Bailey Button Boots and graced the
7 pages of many popular magazines nationwide and internationally.
8 24. Deckers has spent substantial time, effort, and money in designing,
9 developing, advertising, promoting, and marketing the UGG® brand and its line of
10 footwear embodying the Bailey Button Boot Trade Dress. Deckers spends millions of
11 dollars annually on advertising of UGG® products, including footwear embodying the
12 Bailey Button Boot Trade Dress.
13 25. Due to its long use, extensive sales, and significant advertising and
14 promotional activities, Deckers’ Bailey Button Boot Trade Dress has achieved
15 widespread acceptance and recognition among the consuming public and trade
16 throughout the United States. Indeed, Deckers has sold millions of dollars’ worth of
17 UGG® Bailey Button Boots, the embodiment of the Bailey Button Boot Trade Dress.
18 Accordingly, the Trade Dress has achieved a high degree of consumer recognition and
19 secondary meaning, which serves to identify Deckers as the source of footwear
20 featuring said trade dress.
21 26. Upon information and belief, Slippers is a competitor and Defendants
22 introduced Accused Products into the stream of commerce in an effort to exploit
23 Deckers’ goodwill and the reputation of the UGG® Bailey Button Boot.
24 27. The Accused Products produced, distributed, advertised and offered for
25 sale by Defendants bear confusingly similar reproductions of the Bailey Button Boot
26 Trade Dress, such as to cause a likelihood of confusion as to the source, sponsorship
27 or approval by Deckers of Slippers’ products.
28 28. Defendants’ use of the Bailey Button Boot Trade Dress is without
7
1 Deckers’ permission or authority and in total disregard of Deckers’ rights to control its
2 intellectual property. There are numerous other shoe designs in the footwear industry,
3 none of which necessitate copying or imitating the Bailey Button Boot Trade Dress.
4 29. Defendants’ use of the Bailey Button Boot Trade Dress is likely to lead
5 to and result in confusion, mistake or deception, and is likely to cause the public to
6 believe that Accused Products are produced, sponsored, authorized, or licensed by or
7 are otherwise connected or affiliated with Deckers.
8 30. As a direct and proximate result of the foregoing acts, Deckers has
9 suffered and will continue to suffer significant injuries in an amount to be determined
10 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that it
11 has sustained and will sustain, and all gains, profits and advantages obtained by
12 Defendants as a result of its infringing acts.
13 31. Furthermore, unless Defendants’ unlawful acts are enjoined by this
14 Court, there is no adequate remedy at law that can fully compensate Deckers for the
15 harm caused by Defendants’ infringement, which is ongoing. Accordingly, Deckers is
16 entitled to injunctive relief prohibiting Defendants from continuing to infringe the
17 Bailey Button Boot Trade Dress, or any designs confusingly similar thereto.
18 SECOND CLAIM FOR RELIEF
19 (Trade Dress Infringement – California Common Law)
22 33. Defendants’ infringement of the Bailey Button Boot Trade Dress also
23 constitutes trade dress infringement under common law of the state of California.
24 34. The Accused Products produced, distributed, advertised and offered for
25 sale by Defendants bear confusingly similar reproductions of the Bailey Button Boot
26 Trade Dress, such as to cause a likelihood of confusion as to the source, sponsorship
27 or approval by Deckers of Accused Products. Defendants’ unauthorized use of the
28 Bailey Button Boot Trade Dress has caused and is likely to cause confusion as to the
8
1 source of Accused Products among consumers.

4 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that it
5 has sustained on account of Defendants’ infringement, and all gains, profits and
6 advantages obtained by Defendants as a result of its unlawful acts.
7 36. Defendants’ unlawful acts were willful, deliberate, and intended to cause
8 confusion among the public, taken in reckless disregard of Deckers’ rights. As such,
9 an award of exemplary and punitive damages is necessary in an amount sufficient to
10 deter similar misconduct in the future.
13 damages caused by Defendants’ infringement, which is ongoing. Accordingly,
14 Deckers is entitled to injunctive relief prohibiting Defendants from continuing to
15 infringe the Bailey Button Boot Trade Dress, or any designs confusingly similar
16 thereto.
17 THIRD CLAIM FOR RELIEF
18 (Unfair Competition in Violation of Cal. Bus. & Prof. Code, § 17200 et. seq.)
21 39. Defendants’ misappropriation and unauthorized use of the Bailey Button
22 Boot Trade Dress to promote the Accused Products is likely to confuse or mislead
23 consumers into believing that such products are authorized, licensed, affiliated,
24 sponsored, and/or approved by Deckers, constituting deceptive, unfair, and fraudulent
25 business practices and unfair competition in violation of the California Unfair
26 Business Practices Act, Cal. Bus. & Prof. Code, § 17200, et. seq.
27 40. Upon information and belief, Defendants’ deceptive, unfair, and
28 fraudulent business practices were willfully undertaken with full knowledge of the
9
1 Bailey Button Boot Trade Dress and with the intent to misappropriate Deckers’
2 goodwill and reputation established in the UGG® Bailey Button Boot.
5 at trial. Deckers is entitled to all available relief provided for under the California
6 Unfair Business Practices Act, Cal. Bus. & Prof. Code, § 17200 et. seq., including an
7 accounting and disgorgement of all illicit profits that Defendants made on account of
8 its deceptive, unfair, and fraudulent business practices. Furthermore, because Deckers
9 has no adequate remedy at law for Defendants’ ongoing unlawful conduct, Deckers is
10 entitled to injunctive relief prohibiting Defendants from unfair competition.
11 FOURTH CLAIM FOR RELIEF
12 (Unfair Competition – California Common Law)
15 43. Defendants’ misappropriation and unauthorized use of the Bailey Button
16 Boot Trade Dress to promote the Accused Products also constitutes unfair competition
17 in violation of common law of the state of California.
18 44. Deckers has expended substantial time, resources and effort in creating
19 and developing UGG® footwear, including the UGG® Bailey Button Boot, the
20 embodiment of the Bailey Button Boot Trade Dress, which consumers recognize as
21 originating from Deckers.
22 45. Defendants introduced Accused Products into the stream of commerce in
23 order to exploit Deckers’ goodwill and the reputation established in the UGG® Bailey
24 Button Boot for Defendants’ own pecuniary gain. Defendants’ unauthorized use of
25 the Bailey Button Boot Trade Dress resulted in Defendants unfairly benefitting from
26 Deckers’ goodwill and the reputation established in the UGG® Bailey Button Boot.
27 46. Upon information and belief, Defendants’ unlawful acts are willful,
28 deliberate, and intended to cause confusion among the public and taken in reckless
10
1 disregard of Deckers’ rights. As such, an award of exemplary and punitive damages is

2 necessary in an amount sufficient to deter similar misconduct in the future.
5 at trial. Deckers is entitled to recover all damages, including attorneys’ fees, that
6 Deckers has sustained on account of Defendants’ unfair competition, and all gains,
7 profits and advantages obtained by Defendants as a result of its unlawful acts.
8 Furthermore, because Deckers has no adequate remedy at law for Defendants’
9 ongoing unlawful conduct, Deckers is entitled to injunctive relief prohibiting
10 Defendants from unfair competition.
11 FIFTH CLAIM FOR RELIEF
12 (Patent Infringement – U.S. Pat. No. D599,999)
15 49. In order to protect its valuable brands, Deckers owns a number of patents
16 covering various styles of footwear it markets, including the footwear products
17 identified herein. These patents include U.S. Pat. No. D599,999 (“the ’999 Patent”)
18 issued on September 15, 2009, a true and correct copy of which is attached hereto as
19 Exhibit A and incorporated herein.
20 50. Deckers is the owner by assignment of all rights, title and interest in and
21 to the ’999 Patent and Deckers has marked substantially all footwear products
22 embodying the design of the ’999 Patent with “Pat. No. D599,999” on a product label
23 in compliance with 35 U.S.C. § 287, putting Defendants on notice of the ’999 Patent.
24 51. Defendants have produced, distributed, advertised, marketed, offered for
25 sale, and/or sold within the United States, and/or have imported into the United States
26 Accused Products which bear a design that infringes upon the design of the ’999
27 Patent, in violation of 35 U.S.C. § 271.
28 52. Deckers has not granted a license or given Defendants any form of
11
1 permission to the ’999 Patent and Defendants’ infringement of the ’999 Patent is
2 without Deckers’ permission or authority and in total disregard of Deckers’
3 intellectual property rights.
6 at trial. Deckers is entitled to recover all damages sustained on account of
7 Defendants’ infringement, and all gains, profits and advantages obtained by
8 Defendants under 35 U.S.C. §§ 284 and 289.
9 54. Upon information and belief, Defendants’ infringing acts were willful,
10 deliberate, and taken in reckless disregard of the ’999 Patent despite having been put
11 on notice through Deckers’ patent marking. Defendants took these actions knowing
12 the objectively high likelihood that such actions constituted infringement of the ’999
13 Patent. As Defendants’ willful acts render this an exceptional case, Deckers is entitled
14 to enhanced damages and reasonable attorney fees under 35 U.S.C. § 284.
17 harm caused by Defendants’ infringement of the ’999 Patent, which is ongoing.
18 Accordingly, Deckers is entitled to injunctive relief under 35 U.S.C. § 283 prohibiting
19 Defendants from continuing to infringe the ’999 Patent.
20 PRAYER FOR RELIEF
21 WHEREFORE, Plaintiff Deckers Outdoor Corporation respectfully prays for
22 judgment against Defendants Slippers International, Inc. and DOES 1-10 as follows:
23 1. A judgment that Defendants infringed Deckers’ Bailey Button Boot
24 Trade Dress and U.S. Pat. No. D599,999;
25 2. An order permanently enjoining and restraining Defendants, their agents,
26 servants, employees, officers, associates, and all persons acting in concert with any of
27 them from infringing Deckers’ intellectual property at issue, including but not limited
28 to infringing acts such as:
12
1 a. manufacturing, importing, advertising, marketing, promoting,

2 supplying, distributing, offering for sale, or selling Accused Products or any
3 other products that bear an identical or confusingly similar design as Deckers’
4 Bailey Button Boot Trade Dress;
5 b. manufacturing, importing, advertising, marketing, promoting,
6 supplying, distributing, offering for sale, or selling Accused Products or any
7 other products that infringe the ’999 Patent;
8 c. engaging in any other activity constituting unfair competition with
9 Deckers, or acts and practices that deceive consumers, the public, and/or trade,
10 including without limitation, the use of designations and design elements used
11 or owned by or associated with Deckers; and
12 d. committing any other act which falsely represents, or which has
13 the effect of falsely representing goods and services of Defendants are
14 licensed, authorized, offered, produced, sponsored, or in any other way
15 associated with Deckers;
16 3. An order requiring Defendants to recall from any distributors and
17 retailers and to deliver to Deckers for destruction any Accused Products, including the
18 means of making such products;
19 4. An order requiring Defendants to file with this Court and serve on
20 Deckers within thirty (30) days after entry of the injunction, a report in writing and
21 under oath setting forth the manner in which Defendants complied with the injunction;
22 5. An order for an accounting of all gains, profits and advantages derived by
23 Defendants on account of the unlawful acts complained of herein pursuant to 15
24 U.S.C. § 1117(a), Cal. Bus. & Prof. Code, § 17200 et. seq., and any other applicable
25 federal statute or California state and common law;
26 6. An award of damages equal to Defendants’ profits and all damages
27 sustained by Deckers as a result of Defendants’ wrongful acts;
28 7. An award of damages equal to treble Defendants’ profits or Deckers’
13
1 damages, whichever is greater, on account of Defendants’ willful infringement;

2 8. An award of punitive damages and Deckers’ costs, attorneys’ fees, and
3 interest as allowed under all applicable federal statutes and California state laws; and
4 9. All other relief that the Court may deem just and proper.
5
6 Dated: May 14, 2020 BLAKELY LAW GROUP
7
8 By: /s/ Mark S. Zhai______________
Brent H. Blakely
9 Mark S. Zhai
Colby A. Meagle
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1 DEMAND FOR JURY TRIAL

2 Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Deckers
3 Outdoor Corporation hereby demands a trial by jury as to all claims in this litigation.
4
5 Dated: May 14, 2020 BLAKELY LAW GROUP
6
7 By: /s/ Mark S. Zhai______________
Brent H. Blakely
8 Mark S. Zhai
Colby A. Meagle
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Case 5:20-cv-01033 Document 1-1 Filed 05/14/20 Page 1 of 8 Page ID #:16
EXHIBIT A
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Case 5:20-cv-01033 Document 1 Filed 05/14/20 Page 1 of 15 Page ID #:1

1 Brent H. Blakely (SBN 157292)

1 Plaintiff Deckers Outdoor Corporation (“Deckers” or “Plaintiff”) for

1 6. Defendant Slippers International, Inc. is a corporation organized and

1 11. The world-wide recognition as a “premium” brand and the overwhelming

1 d. Exposed fleece-type lining edging the overlapping panels and top

1 source of Accused Products among consumers.

1 disregard of Deckers’ rights. As such, an award of exemplary and punitive damages is

1 a. manufacturing, importing, advertising, marketing, promoting,

1 damages, whichever is greater, on account of Defendants’ willful infringement;

1 DEMAND FOR JURY TRIAL

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